PMS International Group Plc v Magmatic Limited  UKSC 12
The Supreme Court's decision provides some clarification on the extent to which surface decoration is to be taken into account when considering infringement of a registered design and underscores how design rights only protect the appearance of an article, not the concept. However, by upholding the Court of Appeal's decision that the copycat article did not infringe the original Trunki design, there is concern that the balance between protecting new designs and allowing fair competition may have shifted too far in favour of the copycats which could have a detrimental impact on creative industries.
Famously rejected in the BBC's Dragon's Den in 2006, Magmatic went onto achieve significant commercial success with their children's ride-along suitcase the Trunki.
In June 2003, Magmatic registered a Community Registered Design (CRD) for the appearance of the Trunki Case, images of which appear below. CRDs give the owner the exclusive right to use, make, offer, put on the market, import, export or stock products incorporating the protected design, and to prevent others from doing the same acts with products which do not produce a different overall impression to the CRD.
PMS imports and sells a similar product under the name Kiddee Case (image also below) whose design was admittedly inspired by that of the Trunki. Magmatic sued PMS claiming that the design of the Kiddee Case created the same overall impression to the CRD and thus amounted to infringement.
||The Trunki Case
||The Kiddee Case
In July 2013, the High Court held that the CRD was infringed by the Kiddee Case. The judge held that the Trunki Case was a 'strikingly novel' product which was entitled to a broad scope of protection; and as the CRD was concerned with the shape of the article, any surface decoration on the Kiddee Case was to be disregarded when considering the overall impression.
PMS appealed and in February 2014, the Court of Appeal granted that appeal and reversed the High Court decision. The Court of Appeal held that the trial judge's analysis had erred in two key respects, and those errors had been carried through to his ultimate decision on infringement:
- He did not attach enough importance to the appearance of the CRD and the impression of a horned animal that it creates.
- He did not take into account the colour contrast between the wheels and the body of the CRD, which was held to be a fairly striking feature of the CRD that was absent from the design of the Kiddee Case.
Having established the correct analysis of the CRD, the Court of Appeal carried out its own comparison of the overall impression created by the CRD as against the design of the Kiddee Case and found them to be different.
Magmatic appealed to the Supreme Court, which was to be the first time the scope of European registered design law would be heard by the UK's highest appellate court.
THE SUPREME COURT DECISION
On 9 March 2016, the Supreme Court handed down its decision. The Justices of the Supreme Court unanimously rejected Magmatic's appeal, holding that:
- The trial judge did not give proper weight to the overall impression of the CRD as an animal with horns, and the Court of Appeal was right to conclude that his failure to mention this point meant that he had erroneously overlooked it.
- Whilst of lesser impact in the analysis of overall impression, the trial judge also failed to take into account that the absence of decoration on the CRD reinforced the overall impression it created of a horned animal.
- The Court of Appeal was correct in treating the CRD as not merely a shape but a shape in two contrasting colours, as the components of the CRD shown in black were intended to contrast with the main body of the design.
Accordingly, the Supreme Court agreed with the Court of Appeal's criticisms of the High Court judgment and, having established the correct basis in law, the Court of Appeal was entitled to revisit the question of infringement. Satisfied that the Court of Appeal's approach was correct, the Supreme Court would not interfere with its conclusions. Therefore, the Court of Appeal's decision that Magmatic's CRD had not been infringed was upheld.
WHY IS THIS IMPORTANT?
The decision highlights the extent to which surface decoration should be taken into account when assessing the scope of the CRD, specifically when considering infringement in circumstances where the CRD has no such decoration but the alleged infringing article does. In summary, where the CRD contains a colour, pattern or tonal contrast, then the design is for more than a mere shape: those features will form part of the CRD and will feed into the analysis of overall impression for assessing infringement. As Magmatic's registered design consisted of computer-assisted design drawings (CADs) with light colours for the main body of the suitcase and dark colours for the wheels and handles, those tonal contrasts formed part of the design. When comparing Magmatic's CRD with the design of PMS's Kiddee Case, the absence of those tonal contrasts in the Kiddee Case impacted upon the overall impression it created and led (in part) to the Court of Appeal's conclusion that there was no infringement.
The Supreme Court reaffirmed that the absence of ornamentation may be a feature of a CRD, but declined to resolve the issue of whether the absence of ornamentation was a feature of Magmatic's CRD. This begs the question whether Magmatic's CRD would have been infringed had its CRD been registered using monochrome CADs or a simple line drawing with no tonal contrasts whatsoever, therefore being a registration for a shape alone. If, as in Samsung v Apple, the absence of surface decoration is itself a feature of Magmatic's CRD, then the surface decoration of the Kiddee Case could conceivably cause it to create a different overall impression when compared to an unadorned version, even if the shape was identical.
The Supreme Court also drew interesting correlations between patents and design registrations in that "the selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them". In order to benefit from the monopolistic rights granted by a registration, it is appropriate that the rights owner has defined the scope of its rights with certainty and, having 'pinned its colours to the mast' it should not be able to disregard features covered by the registration (such as tonal contrasts) in the same way it should not be able to add features.
Magmatic may feel aggrieved by this decision which could be perceived as placing tough limitations on the rights granted to owners of registered designs. However, there are important lessons to take from this case. First, rights owners should select the drawings and images carefully when registering a design, always bearing in mind that they will set the parameters of what will and will not infringe the registration. Second, whilst black and white or monochrome representations will unequivocally cover all colour variations, any tonal contrasts may severely limit the scope of design protection. Third, CADs may confer narrower design protection than line drawings as they may be more likely to be interpreted as including the absence of surface decoration as an element of the registered design.
Where time and funds allow, and particularly in light of this decision, rights-owners are advised to file simultaneous registrations for multiple variations of a design, capturing different angles, configurations, colours and ornamentation, as this should help them to achieve the broadest scope of protection.